The ECJ decides on the jurisdiction of a national infringement court in an action arising from a foreign patent if the invalidity of the foreign patent is asserted.
Article 4 (1) of Regulation (EU) No. 1215/2012 (so-called Brussels Ia Regulation) provides that the national courts always have jurisdiction over persons domiciled in the Member State concerned. Infringement proceedings arising from a foreign IP right (trademark, copyright, design, patent) can therefore always be brought at the infringer’s domicile.
However, Art. 24 (4) provides that, in the case of industrial property rights registered in a particular state, the courts of that state have exclusive jurisdiction to decide on the validity of the IP right. The national courts alone therefore decide on the legal status of these property rights.
Article 24
Irrespective of the domicile of the parties, the following courts of a Member State shall have exclusive jurisdiction:
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents signed at Munich on October 5, 1973, the courts of any Member State shall have exclusive jurisdiction in any proceedings relating to the grant or validity of a European patent granted for that Member State;
Art. 4 (1) and Art. 24 (4) may come into conflict if the infringer is sued for a foreign IP right at his domicile and the infringer then objects to the invalidity of the IP right.
This has always led to the question of what to do with an action brought in this way as soon as the infringer raises the objection of nullity. The previous case law was that the national infringement proceedings could then not be continued. This was an unfortunate situation because the infringement action brought at the infringer’s domicile (in the case of a foreign IP right) then became inadmissible, making a large number of national infringement proceedings necessary.
In the specific case, the patent proprietor had brought an action for injunctive relief and damages against the defendant based on a number of national parts of an EP (including the Swedish part). The defendant had objected to the invalidity of all patents, including the foreign patents, and also objected to the inadmissibility of the action based on the actions arising from the foreign patents because it had objected to the invalidity of the foreign patents. According to previous case law, the Swedish court should not have ruled on the action arising from the foreign patents as soon as the objection of nullity was raised.
The Swedish infringement court of first instance therefore also declared that it had no jurisdiction to rule on the foreign patents. The claimant appealed against this to the Swedish Court of Appeal (Svea hovrätt, = Stockholm Higher Regional Court). This court has now referred the question to the ECJ as to whether and in what way it has jurisdiction to rule on the infringement action arising from the foreign EU patents.
In its decision, the ECJ has put an end to the previous case law and clarified that the national courts at the defendant’s domicile can also rule on the nullity defense against foreign IP rights. They are not allowed to decide (in isolation) on the legal validity, i.e. on the invalidity/cancellation of the property rights. However, they can make a decision on the nullity defense in the context of the infringement proceedings.
must be interpreted as meaning that a court of the Member State of domicile of the defendant which is seised, pursuant to Article 4(1) of that regulation, of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction to hear that action where, in the context of that action, that defendant challenges, as its defence, the validity of that patent, whereas the courts of that other Member State have exclusive jurisdiction to rule on that validity.
must be interpreted as not applying to a court of a third State and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State. If a court of a Member State is seised, on the basis of Article 4(1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4(1), to rule on that defence, its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended.
The national court that must decide on the infringement therefore remains competent to decide on the infringement proceedings, even if an objection of invalidity is raised. It may stay the infringement proceedings (for example, also with regard to individual national patents) “if it considers that there is a reasonable and non-negligible possibility that the patent will be declared invalid by the competent court of that other Member State”, “which will enable it, when deciding on the infringement action, to take into account a decision of the court seised of the action for a declaration of invalidity”.
However, the national court deciding on the infringement has no jurisdiction to rule on the legal status of the IP right concerned. The courts of the issuing state have sole jurisdiction in this regard.
The infringement court can therefore stay its Infringement proceedings or, if it does not consider the attacks on the IP right to be sufficiently promising, dismiss them and decide on the infringement action accordingly without such a decision on the validity (to be made at the court of the respective state).
This means that the infringement courts can also rule on infringements in foreign EU states, even if the nullity defense is raised.
Another issue that the ECJ has addressed, at least in passing, is the question of the standard of suspension. The following statements by the ECJ can be found in recital 51:
If it considers it justified, in particular where it takes the view that there is a reasonable, non-negligible possib in ility of that patent being declared invalid by the court of that other Member State that has jurisdiction (see, by analogy, judgment of 12 July 2012, Solvay, C‑616/10, EU:C:2012:445, paragraph 49), the court seised of the infringement action may, where appropriate, stay the proceedings, which allows it to take account, for the purpose of ruling on the infringement action, of a decision given by the court seised of the action seeking a declaration of invalidity.
It is therefore sufficient for suspension that there is a “reasonable and non-negligible possibility” of a declaration of invalidity. Since the legal norms leading to invalidity in the EPC are the same in all member states (of the validation states) (Art. 138 EPC), this statement also indirectly concerns the question of how an infringement court has to deal with the invalidity objection in the event of an objection to invalidity of the national European patent.
In Germany, the infringement courts are also not called upon to decide on the invalidity of European patents. They must also decide on the question of whether they can stay or continue infringement proceedings in the event of a nullity attack on the IP right in question.
Although the ECJ’s disagreement only concerns matters within the scope of the Brussels Ia Regulation, this also provides an insight into the national suspension standard. In Germany, the courts only stay proceedings if the nullity attack has a (depending on the wording) clearly predominant or very predominant prospect of success. The question is therefore whether the ECJ has also indirectly said something about the national stay standard in infringement disputes concerning industrial property rights.
